JS 44C/SDNY

REV. 4/2014
JUDGE SCHOFIELD
14 CV 69>4$
CIVIL COVER SHEET
The JS-44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of
pleadings or other papers as required by law, except as provided by local rules of court. This form, approved by the
Judicial Conference of the United States in September 1974, is required for use of the Clerk of Court for the purpose of
initiating the civil docket sheet.
2014
PLAINTIFFS
CIPRIANI GROUP, INC.
DEFENDANTS
CIPRIANI'S PASTA & SAUCE INC. and ANNETTE JOHNSON
ATTORNEYS (FIRM NAME, ADDRESS, AND TELEPHONE NUMBER ATTORNEYS (IF KNOWN)
George Gottlieb and Jonathan M. Purow; Gottlieb, Rackman &Reisman PC --
270 Madison Avenue, 8th Fir
New York, NY 10016 Phone-2120684-3900
CAUSE OF ACTION (CITETHE U.S. CIVIL STATUTEUNDERWHICH YOUARE FILING ANDWRITEA BRIEFSTATEMENT OF CAUSE)
(DO NOT CITE JURISDICTIONAL STATUTES UNLESS DIVERSITY)
15U.S.C. 1051 etseq.
Has this action, case, orproceeding, orone essentially thesamebeen previously filed in SDNY at any time? Nctj'esUjudge Previously Assigned
If yes, wasthis case Vol.Q Invol. [~J Dismissed. No Q] Yes | | If yes, give date &Case No.
IS THIS AN INTERNATIONAL ARBITRATION CASE? No [x] Yes I"J
(PLACEAN[x] INONEBOXONLY)
TORTS
NATURE OF SUIT
CONTRACT PERSONAL INJURY PERSONAL INJURY
[ ] 367 HEALTHCARE/
PHARMACEUTICAL PERSONAL , , 625 DRUGRELATED
INJURY/PRODUCT LIABILITY
[ ] 365 PERSONAL INJURY
PRODUCT LIABILITY
[ ] 368 ASBESTOS PERSONAL
INJURY PRODUCT
LIABILITY
PERSONAL PROPERTY
[ ] 370 OTHER FRAUD
[ ] 371 TRUTH IN LENDING
[ ] 310 AIRPLANE
[ ] 315 AIRPLANE PRODUCT
LIABILITY
[ ] 320 ASSAULT, LIBEL &
SLANDER
[ ] 330 FEDERAL
EMPLOYERS'
LIABILITY
[ ] 340 MARINE
[ ] 345 MARINE PRODUCT
LIABILITY
[ ] 350 MOTOR VEHICLE
[ ] 355 MOTOR VEHICLE
PRODUCT LIABILITY
[ ] 360 OTHER PERSONAL
INJURY
[ ] 362 PERSONAL INJURY -
MED MALPRACTICE
[ ] 110 INSURANCE
[ ] 120 MARINE
[ ] 130 MILLER ACT
[ ] 140 NEGOTIABLE
INSTRUMENT
[ ] 150 RECOVERY OF
OVERPAYMENT &
ENFORCEMENT
OF JUDGMENT
[ ] 151 MEDICARE ACT
[ ] 152 RECOVERY OF
DEFAULTED
STUDENT LOANS
(EXCL VETERANS)
[ ] 153 RECOVERY OF
OVERPAYMENT
OF VETERAN'S
BENEFITS
[ ] 160 STOCKHOLDERS
SUITS
[ ] 190 OTHER
CONTRACT
[ ] 195 CONTRACT
PRODUCT
LIABILITY
[ ] 196 FRANCHISE
ACTIONS UNDER STATUTES
CIVIL RIGHTS
[ ] 440 OTHER CIVIL RIGHTS
(Non-Prisoner)
[ ]441 VOTING
( ] 442 EMPLOYMENT
[ ) 443 HOUSING/
ACCOMMODATIONS
[ ] 445 AMERICANS WITH
DISABILITIES -
EMPLOYMENT
[ ] 446 AMERICANS WITH
DISABILITIES -OTHER
[ ] 448 EDUCATION
REAL PROPERTY
[ 1210
[ )220
[ )230
[ ] 380 OTHER PERSONAL
PROPERTY DAMAGE
[ ] 385 PROPERTY DAMAGE
PRODUCT LIABILITY
PRISONER PETITIONS
[ ] 463 ALIEN DETAINEE
[ ] 510 MOTIONS TO
VACATE SENTENCE
28 USC 2255
( ] 530 HABEAS CORPUS
[ ] 535 DEATH PENALTY
[ ] 540 MANDAMUS & OTHER
PRISONER CIVIL RIGHTS
[ ] 550 CIVIL RIGHTS
[ j 555 PRISON CONDITION
[ )560 CIVIL DETAINEE
FORFEITURE/PENALTY
SEIZURE OF PROPERTY
21 USC 881
[ ] 690 OTHER
LABOR
[ ] 710 FAIR LABOR
STANDARDS ACT
[ ] 720 LABOR/MGMT
RELATIONS
[ ] 740 RAILWAY LABOR ACT
[ ] 751 FAMILY MEDICAL
LEAVE ACT (FMLA)
[ ] 790 OTHER LABOR
LITIGATION
[ ] 791 EMPL RET INC
SECURITY ACT
IMMIGRATION
[ ] 462 NATURALIZATION
APPLICATION
[ ] 465 OTHER IMMIGRATION
ACTIONS
[ )240
[ 1245
LAND
CONDEMNATION
FORECLOSURE
RENT LEASE &
EJECTMENT
TORTS TO LAND
TORT PRODUCT
LIABILITY
ALL OTHER
REAL PROPERTY
CONDITIONS OF CONFINEMENT
[ ]290
Checkif demanded incomplaint:
CHECK IF THIS IS A CLASS ACTION
UNDER F.R.C.P. 23
ACTIONS UNDER STATUTES
BANKRUPTCY OTHER STATUTES
I 1375 FALSE CLAIMS
[ ] 422 APPEAL f J400STATE
28 USC 158 REAPPORTIONMENT
[ ] 423 WITHDRAWAL [ ] 410 ANTITRUST
28 USC 157 [ ] 430 BANKS &BANKING
[ ] 450 COMMERCE
[ ] 460 DEPORTATION
PROPERTY RIGHTS [ ] 470 RACKETEER INFLU
ENCED & CORRUPT
[ ] 820 COPYRIGHTS ORGANIZATION ACT
[ ]830 PATENT (RICO)
iC 840 TRADEMARK [ ]480 CONSUMER CREDIT
[ ] 490 CABLE/SATELLITE TV
SOCIAL SECURITY [ ] 850 SECURITIES/
COMMODITIES/
[ ]861 HIA(1395ff) EXCHANGE
[ ] 862 BLACKLUNG (923)
[ ] 863 DIWC/DIWW (405(g))
[ ] 864 SSID TITLE XVI
[ ] 865 RSI (405(g)) [ ] 890 OTHER STATUTORY
ACTIONS
[ ) 891 AGRICULTURAL ACTS
FEDERAL TAX SUITS
[ ] 870 TAXES (U.S. Plaintiff or
Defendant)
[ ] 871 IRS-THIRD PARTY
26 USC 7609
[ ] 893 ENVIRONMENTAL
MATTERS
[ ] 895 FREEDOM OF
INFORMATION ACT
[ ] 896 ARBITRATION
[ ] 899 ADMINISTRATIVE
PROCEDURE ACT/REVIEW OR
APPEAL OF AGENCY DECISION
[ J 950 CONSTITUTIONALITY OF
STATE STATUTES

DEMAND $_ OTHER
DO YOyCLAJM THIS CASE ISRELATED TOACIVIL CASE NOW PENDING IN S.D.N.Y.'
JUDGE DOCKET NUMBER
CheckYES only if demanded incomplaint
JURY DEMAND: YES Q\IO NOTE: You must also submit at the time of filing the Statement of Relatedness form (Form IH-32).
(PLACEAN x INONEBOXONLY! ORIGIN
S 1 Original 2 Removed from Ll 3 Remanded 4 Reinstated or
Proceeding StateCourt from Reopened
a. all parties represented Court"3'6
| | b. At least one
party is pro se.
(PLACEAN x INONEBOXONLY) BASIS OF JURISDICTION
1 U.S. PLAINTIFF 2 U.S. DEFENDANT [x] 3 FEDERAL QUESTION Q4 DIVERSITY
(U.S. NOT A PARTY)
I I 5 Transferred from Q 6 Multidistrict
(Specify District) Litigation
I I 7 Appeal toDistrict
Judge from
Magistrate Judge
Judgment
IFDIVERSITY, INDICATE
CITIZENSHIP BELOW.
CITIZENSHIP OF PRINCIPAL PARTIES (FOR DIVERSITY CASES ONLY)
(Place an [X] in one box for Plaintiff and one box for Defendant)
PTF DEF
CITIZEN OF THIS STATE [ ] 1 [ ] 1
CITIZEN OF ANOTHER STATE [ ] 2 [ ] 2
CITIZEN OR SUBJECT OF A
FOREIGN COUNTRY
PTF DEF
[]3[]3
INCORPORATED or PRINCIPAL PLACE [ ] 4 [ ] 4
OF BUSINESS IN THIS STATE
PLAINTIFF(S) ADDRESS(ES) ANDCOUNTY(IES)
DEFENDANT(S) ADDRESS(ES) AND COUNTY(IES)
PTF DEF
INCORPORATED and PRINCIPAL PLACE [ ] 5 [ ] 5
OF BUSINESS IN ANOTHER STATE
FOREIGN NATION [ J6 [ ]6
DEFENDANT(S) ADDRESS UNKNOWN
REPRESENTATION IS HEREBY MADE THAT, AT THIS TIME, I HAVE BEEN UNABLE, WITH REASONABLE DILIGENCE, TO ASCERTAIN
RESILIENCE ADDRESSES OF THE FOLLOWING DEFENDANTS:
Check one: THIS ACTION SHOULD BE ASSIGNED TO: Q WHITE PLAINS [x] MANHATTAN
(DO NOT check either box if this a PRISONER PETITION/PRISONER CIVILRIGHTS
. .COMPLAINT.)
DATE \ Ji/N SIGNATURE OF ATTORNEY QFRECORD/^ ADMITTED TO PRACTICE IN THIS DISTRICT
7) **, (A. JUcA\ ^&^~~^ [Xj YES (DATE ADMITTED Mo. July Yr. 1963 )
RECEIPT* y>X-^-** V*-~ Vi Attorney Bar Code #
Magistrate Judge is to be designated by the Clerk of the Cj^|g( JHf}$ MAA^
Magistrate Judge
Ruby J. Krajick, Clerk of Court by. Deputy Clerk, DATED
UNITED STATES DISTRICT COURT (NEW YORK SOUTHERN)
is so Designated.
Clear Form Save Print
JUDGE SCHOFIELD
14 CV 6917
UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF NEW YORK
CIPRIANI GROUP, INC.,
Plaintiff,
-against-
CIPRIANI'S PASTA & SAUCE INC.
and ANNETTE JOHNSON,
Defendants.
ECF CASE
Civil Action No.
COMPLAINT FOR
TRADEMARK INFRINGEMENT
CO
JURY TRIAL DEMANDJED ro
c:
CO
o
C")
Plaintiff Cipriani Group, Inc., ("Plaintiff or "Cipriani Group") for its complaint
against the defendants Cipriani's Pasta &Sauce Inc. ("CP&S") and Annette Johnson ("Johnson")
(collectively "Defendants"), herein states asfollows onknowledge astoPlaintiff and otherwise on
information and belief:
INTRODUCTION
1. Plaintiff is the owner of the world-famous Cipriani restaurants and the
"Cipriani Food" line of food and beverage products. Plaintiffowns a family of associated federally
registered trademarks that incorporate the termCIPRIANI in relation to restaurants andfood and
beverage products.
2. Defendants have been manufacturing, distributing, marketing, promoting,
offering forsaleandselling food products suchas pastasandsauces bearing theconfusingly similar
mark "Cipriani's," on their own website and through the stores and websites of major national
retailers; Defendants' actionsblatantlyinfringe Plaintiffs federal trademarkregistrations andwill
continue to cause irreparable harmto Plaintiffs goodwill and reputation.
THE PARTIES
3. PlaintiffCiprianiGroup, Inc. is a corporation organizedandexistingunderthe
lawsof the Stateof NewYorkwithanoffice andprincipal placeof business at 110 East42n Street,
3rd Floor, New York, NewYork, 10017.
4. Upon information and belief, defendant Cipriani's Pasta & Sauce Inc. is a
corporation organized under the laws of the Stateof Illinois, with a principal place of business at
1025 West End Avenue, Chicago Heights, Illinois, 60411.
5. Upon information and belief, defendant Annette Johnson is the principal,
owner andcontrollingentity of defendant CP&S, andis thereforeresponsiblefor the tortiousacts of
CP&S.
6. Upon information and belief, Johnson has a full ownership interest in,
operates and/or manages the business of corporate defendant CP&S.
7. Upon information and belief, there exists, and at all times herein mentioned
there existed, a unity of interests between and among Johnson and CP&S vis-a-vis the ownership,
operation and/or management of the business of CP&S.
8. Upon information and belief, CP&S is so dominated and controlled by
Johnson, such that Defendants may be considered interchangeable with one another.
JURISDICTION AND VENUE
9. This action arises under the trademark laws ofthe United States, the Lanham
Trademark Act of the United States, 15 U.S.C. 1051 et seq., and under the statutory and common
laws of the State of New York.
10. This Court has jurisdiction over the subject matter of this action pursuant to
28 U.S.C. 1338(a).
11. This Court also has supplemental jurisdiction over the state law and unfair
competition claims pursuant to 28 U.S.C. 1367 (a).
12. CP&S (i) operates a website at <www.ciprianispasta.com> through which it
sellsits foodproducts to consumers, including consumers inthis District, (ii) sellsits foodproducts
online and in the retail locations of thirdparty vendors such as Walmart and Amazon, throughwhich
consumers in this District can purchase Defendants' products, and (iii) is otherwise within the
jurisdiction of this Court.
13. Johnson (i) does business in this district through CP&S and the website
<editableeatables.com> including selling products into this District, (ii) has committed tortious acts
outside New York that have caused an injury to Plaintiff in New York, and (iii) is otherwise within
the jurisdiction of this Court.
14. Venue is properly placed in this judicial district pursuant to 28 U.S.C. 1391.
BACKGROUND
A. The Popularity, Fame and Trademark Registrations of Cipriani Group
15. In 1930, Giuseppe Cipriani opened Harry's Bar in Venice, Italy. The bar
soon became the place where Cipriani elegance, good taste, impeccable service and fine food were
used to cater to the elite. As a result, it quickly became a landmark known for luxury and world-
class service.
16. Harry's Bar featured signature menu items such as "carpaccio," ruby red
slices of raw beef named after the Venetian masters, and "bellini," a peach nectar cocktail. These
items became international delicacies, and even today the definition of "carpaccio" often makes
reference to its "Cipriani" origin.
17. After WorldWar II, Harry's Bar becamecelebratedworldwideandservedas
a veritable secondhome for famous jetsetters around the world, includingNoel Coward, Charlie
Chaplin, Queen Elizabeth II of England, Truman Capote, Orson Welles, the Aga Khan, George
Braque, Peggy Guggenheim and Aristotle Onassis. A special martini, the Montgomery, was
invented in honor of the restaurant's most frequent and celebratedguest, Ernest Hemingway. The
nameCipriani is known worldwide for elegance, styleandelitism in the Venetian tradition.
18. In 1985,Cipriani's son, Arrigo Cipriani openedHarryCiprianiFifthAvenue
in the exclusive, high-profile Sherry-Netherland Hotel on 5th Avenue in New York City. This
establishment is not only a restaurant in the traditional style, but also provides services to the
occupants of theSherry-Netherland. Like Harry's BarinVenice, Harry Cipriani FifthAvenue has
attracted thousands of upscale patrons.
19. Based on the success of Harry Cipriani Fifth Avenue, the Cipriani Group
continued in the U.S. by opening several other successful restaurant locations, including Cipriani
Downtown in 1996, Cipriani Wall Street in 1997, Cipriani Dolci in 2002, Cipriani 42nd Street in
1998, Cipriani 23rd Street in 2004, Cipriani Club Residences in 2007, and the gourmet foodstore
Cipriani Le Specialita in 2001. Eachof these locations bearsthe CIPRIANI nameas its dominant
designation, whichservesas an indicatorof originto identify and distinguish Plaintiffs services in
commerce.
20. Additionally, Cipriani Group imports, distributes, promotes, offers for sale
and sells food items, such as pasta, olive oil, drink concentrates, wine, deserts, etc. with the
CIPRIANI name at the Cipriani Restaurants cafes and gourmet food store Cipriani Le Specialita,
located at 110 East 42nd Street, New York, New York, under the CIPRIANI FOOD trademark.
Cipriani Group distributes its foodstuffs throughnational independent gourmet food distributors
such as Balducci's, Dean & Deluca and Williams Sonoma.
21. Cipriani Group's activities under the CIPRIANI name have received and
continue to receive widespread press attention. Plaintiff has been featured in articles in Gourmet
Magazine, Bon Appetit Magazine, The New York Times and New York Magazine.
22. Plaintiffs restaurants regularly attract celebrities such as Kim Kardashian,
Leonardo DiCaprio, Derek Jeter, Bradley Cooper and Robert DeNiro to movie premiere after-
parties, celebrityfundraisers andother star-studdedevents. Acollection of printouts fromtheNew
York Magazine website featuring descriptions of these events are attached as Exhibit A.
International businesspeople, movie, music and sports stars, super models, nobility, and other
luminaries make it a point to patronize and be observed at Cipriani restaurants. The high society
events organized and catered by Cipriani Group are famous worldwide for their elegance,
impeccable style and good taste in food, decor, and entertainment.
23. In the U.S. alone, Cipriani Group has derived substantial revenues from its
restaurant and catering business, and food items marketed under the CIPRIANI marks. This revenue
and the success of Cipriani Group is due to the goodwill and fame fostered by the style, luxury,
reputation, and image that the Cipriani Group has developed and maintains in the goods and services
offered under the CIPRIANI marks.
24. Plaintiff is the owner of the following federally registered trademarks that
incorporate the termCIPRIANI (collectively, the "CIPRIANI Trademarks"), ofwhich copies ofthe
registration certificates areattached as Exhibit B:
Mark
HARRY
CIPRIANI
CIPRIANI
FOOD
CIPRIANI
DOLCI
F7LT
CIPRIANI 42
STREET
CIPRIANI
WALL. STREET
CIPRIANI
WALL
STREET
Registration
Date and
Number
March 21,
2000
Reg No.
2,330,449
November
30, 1999
Reg. No.
2,297,069
July 23, 2002
Reg. No.
2,598,197
June 9, 2009
Reg. No.
3,633,745
May 25,
2004
Reg. No.
2,844,146
June 6, 2009
Reg. No.
3,633,746
First Use Date
November 8,
1985
June 1997
February 2,
2002
November 12,
1998
December,
1997
December 16,
2004
Goods and/or Services
restaurant services
meat extracts; preserved dried and cooked fruits
and vegetables; jellies; jams; eggs; milk, and
other dairy products (excludingice cream, ice
milk and frozen yogurt), edible oils and fats;
fruit preserves, pickles; coffee; tea; cocoa;
sugar; rice; coffee substitutes; flour and
preparations made fromcereals, namely, pasta,
spaghetti, bread, biscuits, cakes and pastry;
confectionery, namely, chocolate, candy,
sweets, honey; mustard; pepper; vinegar; sauces;
spices; wines, aperitifs, spirits made fromcorn,
rice and fruit, and liqueurs.
restaurant services
catering services; provision of conference,
exhibition and meeting facilities; providing
banquet and social function facilities for
special occasions
restaurant and catering services
catering services; provision of conference,
exhibition and meeting facilities; providing
banquet and social function facilities for
special occasions
OPBIANI CLUB REOSENCXt
November
22,2011
U.S. Reg.
No.
4,060,246
2007 restaurant, bar and cocktail lounge services
CIPRIANI
CLUB
RESIDENCES
August 20,
2013
U.S. Reg.
No.
4,387,342
November 9,
2005
restaurant, bar and cocktail lounge services;
apartment, home and condominium services,
namely, promoting the interests of renters and
owners that reside in a community; leasing and
rental of apartments, homes and condominiums;
real estate brokerage services for apartments,
homes and condominiums; real estate
development services, namely, the development
of residential communities, namely, apartments,
homes and condominiums and hotels and
commercial properties, namely, industrial
building, office and retail space.
CARPACCIO
ALLA
CIPRIANI
March 20,
2007
U.S. Reg No.
3,219,820
November 1,
1985
Italian beef dish consisting mainly of thin
slices of raw beef and garnish
CIPRIANI
DOWNTOWN
July 19, 2011
U.S. Reg.
No.
3,996,511
March 1, 1996 restaurant services
B. Defendants' Unlawful Acts and Willful Infringement
25. Defendants have been manufacturing, distributing, marketing, promoting,
offering for sale and selling their food products to unlawfully capitalize on the fame of the
CIPRIANI Trademarks. Defendants have been offering for sale and selling their products online and
in the retail locations of national and regional chains such as Walmart, Price Chopper and Giant
Eagle. Copies of listings for Defendants' foodproducts on the websites ofWalmart and Giant Eagle
supermarket are attached as Exhibit C.
26. Defendants operate a website at <ciprianispasta.com> through which
consumers can order their products for shipment anywhere in the United States. A copy of the
product listingpage for Defendants' website, whichstates"Order Online" repeatedly, is attachedas
Exhibit P.
27. Upon information and belief, Defendants have made a concerted effort to
associate their inferior products with Plaintiffs products.
28. Defendants have established a website <editableeatables.com> that sells
customized food products online ("Editable Eatables"). The following is a true and correct clipping
from the WHOis database record for <editableeatables.com>, a copy of which is attached in its
entirey as Exhibit E, with the contact information for the registrant of the website. The registrant is
defendant Johnson, who lists her email address as <[email protected]>:
Registrant Name: Annette Johnson
Registrant Organization: 1
Registrant Street: 1050 Northfield Drive
Registrant City: Aurora
Registrant State/Province: IL
Registrant Postal Code: 0505
Registrant Country: US
Registrant Phone: +1.6307814548
Registrant; Phone Ext:
Registrant: Fax:
Registrant; Fax Ext:
Registrant Email: salesciprianispasta com
29. The following is a true and correct clipping from Defendants' Editable
Eatables' webpage for "Pasta and Sauce Dinner," a copy of which is attached in its entirety as
Exhibit F. The product description features a photo ofDefendants' infringing pasta product next to
Plaintiffs Cipriani Food pasta sauce, under Defendants' "Cipriani's Pasta and Sauce" banner and
above the text "Est. 1929." Plaintiffs product features its registered trademark CIPRIANI FOOD
and the bartender design that is the central feature of many of Plaintiff s CIPRIANI Trademarks.
8
The product name "Cipriani's" on Defendants' pasta is angled such that it is partially blocked by
Plaintiffs product, so that Plaintiffs CIPRIANI marks are featured. The product package is on sale
for $3.00, a fraction of theactual price of Plaintiffs authentic product:
Pasta and Sauce Dinner
if iv;
In
SKU.
Availability:
In Stock
Quantity:
1000000 pes
Qty: |1
$3.00
Add To Compare | Add To Wishlist
Feed a Family of Three
30. This webpage demonstrates Defendants' knowing and willful efforts to
infringe on Plaintiffs superior products andname.
C. The Irreparable Harm
31. It has taken decades of dedication, hard work and consistent customer
satisfaction for Plaintiffs CIPRIANI Trademarkstobecome famous. Defendants' blatant effortsto
appropriate Plaintiffs business goodwill, name and mark have resulted inPlaintiffbeing associated
with foodproductsover which Plaintiff has no control.
32. Plaintiffs CIPRIANI Trademarks are associated with elegance and
sophistication, and Defendants' products are deliberately undermining this reputation and
undercutting Plaintiffs prices to unjustly profit offof Plaintiff s good name.
33. There is evidence that the unlawful activities of Defendants have resulted in
actual confusion amongst consumers as tothe source and origin of Defendants' products.
34. Thefollowing is a trueandcorrect clipping from Amazon, thepredominant
online retailer, ofthe product page for Defendants' "Cipriani's Pasta Vermicelli Egg Spaghetti Fine,
11.5 Ounce (Pack of 12)," a copy of which is attached initsentirety as Exhibit G. The clipping
features Amazon's customary "Frequently Bought Together" section, which shows thatconsumers
have frequently bought Defendants' product in conjunction with Plaintiffs authentic "Cipriani Food
Tagliolini Extra Thin Egg Pasta" product. The clipping also shows in the "Customers Who Viewed
This ItemAlsoViewed"sectionthat consumersare viewingthePlaintiffs authentic "Cipriani Food"
products at the sametime as Defendants' product:
Frequently Bought Together
Price for both: $49.26
^jji
y+adf (^ftAUKJL&tatJIAdd both to Wish list j
These items are shipped fromand sold by different sellers. Show details
* This item: Cipriani's PastaVermacelli Egg Spaghetti Fine, 11.5-Ounce (Pack of12)$40.06 ($0.29 / oz)
Cipriani Food Tagliolini Extra Thin Egg Pasta8.82 Oz. $9.20 ($3.68 / 100 g) fBBIMIHBIg
Special Offers and Product Promotions
Get a $75 Amazon.com Gift Card: Get the Discover it Cardand get a $75.00 Amazon.com GiftCard
more.
Customers Who Viewed This Item Also Viewed
Cipriani Food Pappardelle Cipriani Food Tagliolini Cipriani Food Tagliarelle Cipriani Food Tagliarelle
Extra Thin EggPasta, 8.82 Extra Thin EggPasta 8.82 Extra Thin Egg Pasta, 8.82 Extra Thin Egg Pasta 8.82
oz Oz. oz oz
****** d2> $9.20 *rww -10. ***** \2
$7.99 $7.99 $16.20
10
35. The aforesaid unlawful activities of Defendants haveresulted inconfusion in
the marketplace and have already caused irreparable harm to the reputation and goodwill ofthe
Plaintiff.
D. Defendants' Notice of Plaintiff s Rights
36. Plaintiff filed toregister the aforementioned HARRY CIPRIANI mark with
the United States Patent and Trademark Office ("U.S.P.T.O.") on January 11, 1994.
37. Plaintiff filed to register the aforementioned CIPRIANI DOLCI and
CIPRIANI FOOD marks with the U.S.P.T.O. on May 5, 1997.
38. Subsequent tothese filings byPlaintiff, Defendants' predecessor-in-interest
Cipriani Spaghetti &Sauce Co., Inc. filed to federally register atrademark in CIPRIANI'S for pasta,
spaghetti, pasta sauce and spaghetti sauce on June 11, 1997, but failed to respond to an Office
Action fromthe U.S.P.T.Oand consequently abandonedthe application.
39. Moreover, Defendants would be on notice of Plaintiffs rights due to
Plaintiffs international fame.
40. Inanattempt to resolve thismatter, Plaintiff sent a cease and desist letter to
Defendants on May 28,2014, which put Defendants on further notice ofPlaintiffstrademark rights.
COUNT I
VIOLATION OF 15 U.S.C. $1114
(Trademark Infringement)
41. Plaintiffrepeats and realleges each allegation inparagraphs 1to40hereofas
if fully set forth herein.
42. Plaintiffis the owner of all right, title and interest in andto the CIPRIANI
Trademarks heretofore alleged.
11
43. Plaintiffput Defendants on notice ofthe CIPRIANI Trademarks and despite
such notice Defendants have continuedtheir infringing activities.
44. The foregoing activities of Defendants violate 15 U.S.C. 1114 (a).
Customers, prospective customers and the trade are likely to be confused, deceived and misled by
Defendants' actions, and to believe that there is an association, sponsorship or endorsement as a
consequence ofthose activities between Defendants and Plaintiff, when in fact there isnone.
45. The foregoing activities ofDefendants infringe the valuable trademark rights
of Plaintiff in the CIPRIANI Trademarks, for the improper benefit of Defendants.
46. The acts of Defendants described herein were undertaken without the
permission, license or consent of Plaintiff.
47. Defendants' foregoing activities have irreparably damaged Plaintiffand have
further caused Plaintiff monetary damages in an amount as yet unknown, but if Defendants'
foregoing activities continue, it is believed that the damage to Plaintiff will exceed $1,000,000.
Defendants' wrongful acts have caused and will continue to cause Plaintiffto suffer irreparable harm
for which it has no adequate remedy at law.
COUNT II
VIOLATION OF 15 U.S.C. 1125(a)
(False Designation of Origin)
48. Plaintiffrepeats and realleges each allegation inparagraphs 1to47 hereofas
if fully set forth herein.
49. Theforegoing activities of Defendants infringe theCIPRIANI Trademarks,
creating the impression that Defendants' products originate from, are sponsored orendorsed by, or
are associated with Plaintiff.
12
50. The foregoing activities of Defendants have caused and will continue to
causethe publicto believe that Defendants' productsoriginatefrom, are sponsored or endorsed
by, or are associated with Plaintiff.
51. The foregoing activities of Defendants are intended to mislead the public to
think that there is an association, sponsorship or endorsement fromPlaintiff, and said activities take
control of the reputation and goodwill of the CIPRIANI Trademarks away from Plaintiff, the
proprietor of the goodwill of the CIPRIANI Trademarks in the UnitedStates and elsewhere in the
world.
52. The foregoingactivitiesof Defendantsconstitutea false designationoforigin,
with the intent to cause confusion and mistake, to deceive and mislead the public, and to improperly
benefit from Plaintiffs valuable trademark rights.
53. Plaintiffput Defendants on notice of the CIPRIANI Trademarks and despite
said notice Defendants have continued their infringing activities.
54. Defendants' said acts violate Section 43(a) of the Lanham Act, 15 U.S.C.
1125(a).
55. Defendants' foregoing activities have irreparably damaged Plaintiffand have
further caused Plaintiff monetary damages in an amount as yet unknown, but if Defendants'
foregoing activities continue, it is believed that the damage to Plaintiff will exceed $1,000,000.
Defendants' wrongful acts have caused and will continue to cause Plaintiffto suffer irreparable harm
for which it has no adequate remedy at law.
13
COUNT III
VIOLATION OF 15 U.S.C. 1125(c)
(Trademark Dilution)
56. Plaintiffrepeats and realleges each allegation inparagraphs 1to 55 as iffully
set forth herein.
57. This cause of action arises under the Federal Trademark Dilution Act, 15
U.S.C. 1125(c).
58. Plaintiffs CIPRIANI Trademarks are famous as that term is defined in 15
U.S.C. 1125(c). Defendants' said acts in infringing the CIPRIANI Trademarks for its business
have diluted, orare likely to, dilute the distinctive quality ofthe CIPRIANI Trademarks.
59. Defendants' use of a mark that is substantially similar to the CIPRIANI
Trademarks dilutes the distinctive quality of said marks bytarnishing or blurring, and is thereby
likely to injure Plaintiff.
60. Defendants' foregoing activities have irreparably damaged Plaintiffand have
further caused Plaintiff monetary damages in an amount as yet unknown, but if Defendants'
foregoing activities continue, it is believed that the damage to Plaintiff will exceed $1,000,000.
Defendants' wrongful acts have caused and will continue to cause Plaintiffto suffer irreparable harm
for which it has no adequate remedy at law.
COUNT IV
VIOLATION OF 15 U.S.C. 1125(a)
(Unfair Competition)
61. Plaintiffrepeats and realleges each allegation inparagraphs 1to60 hereofas
if fully set forth herein.
62. Thiscauseofaction forunfaircompetition arisesunder 15U.S.C. 1125(a).
14
63. Defendants' acts alleged herein constitute unfair competition and will injure
the business reputation and business of Plaintiff.
64. Defendants' foregoingactivities have irreparablydamaged Plaintiffand have
further caused Plaintiff monetary damages in an amount as yet unknown, but if Defendants'
foregoing activities continue, it is believedthat the damage to Plaintiff will exceed $1,000,000.
Defendants' wrongful acts havecausedandwill continueto causePlaintiffto sufferirreparable harm
for which it has no adequate remedy at law.
COUNT V
VIOLATION OF 15 U.S.C. 1125(d)
(Cybersquatting)
65. Plaintiffrepeats and realleges each allegation in paragraphs 1to 64 hereof as
if fully set forth herein.
66. This cause of action for federal trademark cybersquatting arises under 15
U.S.C. 1125(d).
67. Defendants registered and have maintained a website at the domain name
<www.ciprianispasta.com> with knowledge of Plaintiff s rights in the CIPRIANI Trademarks.
68. Defendants registered and have maintained the said domain name with the
intent to divert customers from Plaintiff.
69. Defendants registered and have maintained this domain name with the intent
to profit from the fame and notoriety of the CIPRIANI Trademarks.
70. Defendants registered and have maintained this domain name despite the fact
that they own no intellectual property rights in any portion of the domain name.
71. For the reasons described herein and to be discovered in this case, Defendants
15
has acted in bad faith in registering and operating a website at the domain name
<www.ciprianispasta.com>.
72. Defendants' foregoing activities have irreparably damaged Plaintiffand have
further caused Plaintiff monetary damages in an amount as yet unknown, but if Defendants'
foregoing activities continue, it is believed that the damage to Plaintiff will exceed $1,000,000.
Defendants' wrongful acts have caused and will continue to cause Plaintiffto suffer irreparable harm
for which it has no adequate remedy at law.
COUNT VI
VIOLATION OF NEW YORK GEN. BUS. LAW 360-1
(Injury to Business Reputation)
73. Plaintiffrepeats and realleges each allegation in paragraphs 1 to 72 hereofas
if fully set forth herein.
74. By reason of the practices and acts set forth above, Defendants have injured
Plaintiffs business reputation.
75. The foregoing activities ofDefendants are without the permission, license or
consent ofPlaintiff and, unless enjoined by this Court, Defendants will continue these practices and
acts, thereby harming Plaintiffs business reputation and causing Plaintiff immediate and irreparable
injury.
76. Defendants' wrongful acts violate Section 360-1 of the New York General
Business Law.
77. Defendants' foregoing activities have irreparably damaged Plaintiffand have
further caused Plaintiff monetary damages in an amount as yet unknown, but if Defendants'
foregoing activities continue, it is believed that the damage to Plaintiff will exceed $1,000,000.
16
Defendants' wrongful actshave caused andwill continue tocausePlaintifftosuffer irreparable harm
for which it has no adequate remedy at law.
COUNT VII
UNFAIR COMPETITION AND MISAPPROPRIATION UNDER THE COMMON LAW
78. Plaintiff repeats andreallegeseachallegationin paragraphs 1to 77hereof as
if fully set forth herein.
79. The aforesaid activities ofDefendants misappropriate and trade upon the fine
reputation and goodwill of Plaintiff, thereby injuring that reputation and goodwill, and unjustly
divert from Plaintiff to Defendants the benefits rightfully belonging to Plaintiff.
80. The aforesaid activities of Defendants constitute unfair competition, false
advertising and misappropriation as proscribed by the common law.
81. The aforesaid activities of Defendants have resulted in a likelihood of
confusion between Defendants' products and Plaintiffs products and services.
82. The aforesaid activities of Defendants have caused Plaintiff to sustain
monetary damage, loss and injury.
83. The aforesaid activities of Defendants have been undertaken in bad faith.
84. Defendants have engaged in and continues to engage in the foregoing
activities knowingly and willfully.
85. Defendants' foregoing activities have irreparably damaged Plaintiffand have
further caused Plaintiff monetary damages in an amount as yet unknown, but if Defendants'
foregoing activities continue, it is believed that the damage to Plaintiff will exceed $1,000,000.
Defendants' wrongfulacts havecausedandwill continueto causePlaintiffto sufferirreparable harm
17
for which it has no adequate remedy at law.
WHEREFORE, Plaintiff prays for a judgment against Defendants as follows:
A. Finding that Defendants have infringed Plaintiffs trademarks in violation
of the Lanham Act, 15 U.S.C. 1114 and 15 U.S.C. 1125 (a) and Defendants are liable
therefor;
B. Finding that Defendants' actions constitute dilution of the CIPRIANI
Trademarks in violation of the Lanham Act, 15 U.S.C. 1125(c) and Defendants are liable
therefor.
C. Finding that Defendants' actions constitute a violation of New York
General Business Law 360-1and Defendants are liable therefor;
D. Finding that Defendants' actions constitute unfair competition and
misappropriation under the common law and Defendants are liable therefor;
E. Enjoining Defendants, preliminarily during the pendency of this action,
and permanently hereafter, from:
i. Infringing the CIPRIANI Trademarks in any manner;
ii. Misleading the public to think Defendants' products are associated
with, sponsored or endorsed by the Plaintiff;
iii. Selling their products under the name "Cipriani" or any other name
that is likely to cause confusion with Plaintiffs CIPRIANI Trademarks;
iv. Registering or operating any domain names that incorporate the
CIPRIANI Trademarks or are confusingly similar to the CIPRIANI Trademarks;
F. Directing Defendants to deliver to Plaintiff for destruction all promotional
18
or advertising items in their possession that infringe the CIPRIANI Trademarks;
G. Finding that Defendants' actions constitute a violation of the Lanham Act,
15 U.S.C. 1125 (d) and directing Defendants to transfer to Plaintiff any and all domain name
registrations that includethe words "ciprianis" includingbut not limited to the
<www.ciprianispasta.com> domain name registration;
H. Directing Defendants to account to Plaintiff for all profits resulting from
Defendants' infringing activities;
I. Awarding Plaintiff its damages from Defendants' wrongful acts;
J. Awarding Plaintiff three times the amount of Plaintiffs damages or
Defendants' profits, whichever is greater;
K. Awarding Plaintiff statutory damages;
L. Awarding Plaintiffs attorneys' fees and costs; and
M. Awarding Plaintiff such other and further relief as the Court may deem
just and proper.
19
JURY DEMAND
Plaintiff demands a trial by jury on all facts so triable.
Dated: New York, New York
August 25, 2014
GOTTLIEB, RACKMAN & REISMAN, P.C.
AttornevAfor Plaintiff
By:.
brgeA^ttlieb (GG-5761)
[email protected]
Jonathan M. Purow (JP-0052)
[email protected]
270 Madison Avenue
New York, New York 10016
Phone:(212)684-3900
Fax: (212)684-3999
20